NESTEC S.A.

Patent Trials and Appeals Board

Oct 28, 2020

2020001342 (P.T.A.B. Oct. 28, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/438,718 04/27/2015 Elodie Soussan 3712036-02414 7776
29157 7590 10/28/2020
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
COHEN, MICHAEL P
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
10/28/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ELODIE SOUSSAN and FRANÇOISE MAYNARD
__________

Appeal 2020-001342
Application1 14/438,718
Technology Center 1600
__________

Before ULRIKE W. JENKS, AMEE A. SHAH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of encapsulating bitter peptides, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant’s Specification states that “[p]rotein hydrolyzates are
commercially used specialized nutrition products” but that such products
“have an undesirable taste from hydrolyzed protein that renders the

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Société des
produits Nestlé S.A. (Appeal Br. 2.)
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composition unappealing for oral consumption.” (Spec. ¶¶ 2–3.) The
Specification further states that “[n]evertheless, peptides not only contribute
to the nutritional profile of the composition but also help stabilize the
emulsion in the composition.” (Id. ¶ 3.) Appellant’s invention is generally
directed to a method of encapsulating bitter peptides in a lipid matrix. (Id.
¶ 1.)
Claims 5, 11, 12, and 19–28 are on appeal. Claim 5 is representative
and reads as follows:
5. A method of encapsulating bitter peptides, the method
comprising:
hydrolyzing a protein to form a solution comprising a
protein hydrolysate;
forming an emulsion comprising a water phase
containing the protein hydrolysate and an oil phase comprising
at least one of an oil or a melted fat having a temperature above
the melting point of the melted fat, the protein hydrolysate is
5% to 50% of the water phase by weight, wherein the at least
one oil or melted fat is selected from the group consisting of (i)
milk fat, (ii) cocoa fat, and (iii) a mixture of medium chain
triglycerides (MCT) and soy lecithin; and
adding a gelator to the emulsion to form an organogel
after the bitter peptides from the protein hydrolysate migrate
into oil droplets in the oil phase, the addition of the gelator
entrapping the bitter peptides in the organogel, the bitter
peptides being entrapped in the organogel in-line such that the
emulsion is formed after the hydrolyzing directly in the solution
comprising the protein hydrolysate, wherein the gelator is
selected from the group consisting of phospholipids, lecithin,
monoglyceride, amphiphilic peptides, sorbitan monostearate,
monoacylglycerols, diacylglycerols, triacylglycerols, fatty
alcohol, wax, and combinations thereof, and the only lipids in
the organogel are the gelator and the at least one oil or melted
fat.
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(Appeal Br. 14.)

The prior art relied upon by the Examiner is:
Name Reference Date
Van Benthum et al. US 2009/0123605 A1 May 14, 2009
Friedman et al. US 5,514,670 May 7, 1996
Hill et al. WO 2008/028951 A1 Mar. 13, 2008
Takaichi US 2005/0244543 A1 Nov. 3, 2005
M. Chaplin, Water Structure and Science: Gelatin,
www1.lsbu.ac.uk/water/gelatin.html, updated (2018)
L. Lemieux and RE Simard, Bitter flavour in dairy products. II. A review
of bitter peptides from caseins: their formation, isolation and
identification, structure masking and inhibition, 72 Lait 335–382 (1992)

The following grounds of rejection by the Examiner are before us on
review:
Claims 5, 11, 12, and 19–27 under 35 U.S.C. § 103(a) as unpatentable
over Van Benthum, Lemieux, Chaplin, and Takaichi.2
Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Van
Benthum, Lemieux, Chaplin, and Friedman.
Claim 28 under 35 U.S.C. § 103(a) as unpatentable over Van
Benthum, Lemieux, Chaplin, and Hill.

2 The Examiner’s statement of rejection omits reference to Takaichi.
However, we find this omission to be an inadvertent error as the Examiner
specifically relies on the disclosure in Takaichi to reject claim 19 and its
requirement that the at least one oil or melted fat includes soy lecithin in
mixture with medium chain triglycerides (MCT) as being obvious. (See
Non-Final Action, dated May 10, 2019, 6.) We note further that both the
Examiner and Appellant inadvertently refer to this reference as Takaishi.
(See Non-Final Action 7; Ans. 3, 6–7; Appeal Br. 10.)
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DISCUSSION
Claims 5, 11, 12, 19–27
The Examiner finds that Van Benthum teaches making an emulsion of
hydrolyzed milk proteins having a bitter taste in food compositions for
human consumption with at least one oil such as a cocoa fat or butter fat and
adding a gelator, such as gelatin. (Non-Final Action 4–5 (citing Van
Benthum ¶¶ 6, 45-47, 49, 73, and 74.) The Examiner finds that Chaplin
evidences that gelatin is a polypeptide that is considered amphiphilic. (Non-
Final Action 5.)
The Examiner recognizes that Van Benthum teaches inclusion of a
sterol ester results in a product that “showed less cheesy and cardboard off-
taste” than the “Comparative example” composition of Example 1
(“comparative composition”) that did not include a sterol. (Ans. 5.) The
Examiner determines, however, that such suggests only “an incremental
improvement” over the comparative composition. (Ans. 5.) The Examiner
finds, additionally, that “Van Benthum suggests a combination of fats or
surfactants and bitter peptides results in a reduction of bitterness due to
complexation of the peptides with emulsifier or fat (pg 1, [0006]).” (Non-
Final Action 11.) Consequently, it is the Examiner’s position that one of
ordinary skill in the art would have found it obvious to modify the
“somewhat inferior” comparative composition of Van Benthum with other
teachings in Van Benthum and the prior art. (Id.; see also Ans. 5–6.)
Regarding claim 20 and the requirement that the gelator comprise
lecithin, the Examiner further finds that Van Benthum teaches the
compositions can include lecithin. (Non-Final Action 5 (citing Van
Benthum ¶ 78).) Regarding claim 23 and the requirement that the protein
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hydrolysate comprises plant protein, the Examiner further finds that Van
Benthum teaches an alternative protein source to milk proteins is a vegetable
protein. (Id. at 5–6 (Van Benthum ¶ 54).)
The Examiner notes that Van Benthum does not teach that the bitter
peptides from the hydrolysate migrate into oil droplets. (Id. at 6.) The
Examiner, however, relies on Lemieux’s teaching that it was known at the
time the invention was made that all bitter peptide protein hydrolysates were
lipid soluble. (Id. (citing Lemieux 363).) Regarding claim 12 and its
requirement that at least a portion of non-bitter peptides from the hydrolysis
not be entrapped in the oil phase, the Examiner further notes Lemieux’s
teaching that non-bitter peptides were known to be more water soluble. (Id.)
In light of the foregoing, the Examiner concludes that
[i]t would have been obvious to . . . modify the method of Van
Benthum to obtain bitter peptides in the oil phase of the
emulsion and at least a portion of the non-bitter peptides are not
entrapped in the oil phase since Lemieux teaches that bitter
peptides are lipid soluble and would be expected to dissolve in
the oil phase, it is suggested by Lemieux that the non-bitter are
somewhat hydrophilic and would be expected by one of
ordinary skill to be at least partially outside of the oil phase.
(Id. at 7.)
We agree with the Examiner’s conclusion of obviousness.
a. Claim Construction
First we turn to claim construction. Claim 5, the only independent
claim on appeal, requires that a solution of a protein hydrolysate that
includes bitter peptides plus an oil phase form an emulsion and then the
peptide is entrapped in an organogel by the addition of the gelator which
forms the organogel. The claim requires that “the gelator is selected from
the group consisting of phospholipids, lecithin, monoglyceride, amphiphilic
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peptides, sorbitan monostearate, monoacylglycerols, diacylglycerols,
triacylglycerols, fatty alcohol, wax, and combinations thereof.” And, the
claim also recites that the “at least one oil or melted fat is selected from the
group consisting of (i) milk fat, (ii) cocoa fat, and (iii) a mixture of medium
chain triglycerides (MCT) and soy lecithin.” Furthermore, the claim recites:
“and the only lipids in the organogel are the gelator and the at least one oil
or melted fat” of claim 5. Consequently, we agree with Appellant (Appeal
Br. 7) that the claim necessarily excludes a sterol or stanol ester from the
organogel resulting from the claimed method.
It is true, as the Examiner notes, that the claim uses the open-ended
transition phrase “comprising” (Ans. 4), e.g., the oil phase in claim 5 is
identified as “comprising at least one of an oil or a melted fat . . .,” and thus
the oil phase can include other components. However, the claim limits the
lipids of the organogel that is made using emulsion of the peptide in the oil
phase to only the gelator and the at least one of an oil or a melted fat of the
oil phase and each of those categories of components is further limited by
Markush groupings of particular lipids.
b. Claims 5, 11, 12, 21, 22, 24, 25, 26
The foregoing claim construction matters because Van Benthum,
other than the comparative composition, teaches mixing together hydrolyzed
protein with an oil/fat as well as including a sterol and/or stanol fatty acid
ester, which emulsion may then be mixed with “Gelatine” thereby forming
an organogel. (See, e.g., Van Benthum ¶¶ 31, 44, 70–77.) There does not
appear to be any dispute that the comparative composition does not include a
sterol or stanol fatty acid ester, and otherwise, includes the claimed oil and
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hydrolyzed peptide to form an emulsion, which is then mixed with an
amphiphilic peptide, i.e., gelatin.
Appellant’s entire focus against the Examiner’s obviousness rejection
is that “the principle of operation of Van Benthum requires the presence of a
sterol and/or stanol fatty acid ester, and removing [that component] would
improperly change its principle of operation.” (Appeal Br. 7–9.) We
address this argument as it relates to claims 19, 20, 23, and 27 and any need
to modify any of the compositions of Van Benthum to meet the claim
limitations. Claim 5, however, does not require any such modification.
The Examiner relies on Lemieux only to demonstrate that it was
known at the time of the invention that all bitter peptides disclosed, which
includes hydrolysates of milk proteins, were soluble in lipids. (Non-Final
Action 6.) We agree that Lemieux teaches that solubility property.
(Lemieux 363–364.) The Examiner’s conclusion as to the obviousness of
some modification of Van Benthum to arrive at the method of claim 5
notwithstanding, we conclude that the method of making the comparative
composition of Van Benthum, would necessarily have resulted in the bitter
peptides in the oil phase of the emulsion. In other words, the method recited
in claim 5 is anticipated by the method of making the comparative
composition of Van Benthum.
The Examiner has therefore reasonably established a prima facie case
of unpatentability at least based on inherency, thereby shifting to Appellant
the burden of proving that Van Benthum’s process for making the
comparative composition will yield different results. See In re Best, 562
F.2d 1252, 1255 (CCPA 1977) (“Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35
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U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products”) (footnote omitted). On this record,
Appellant has offered no such proof.
“It is well settled that ‘anticipation is the epitome of obviousness.’”
In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Thus, for this
reason, we agree with the Examiner that claim 5 is obvious over Van
Benthum as evidenced by Lemieux and Chaplin. Although the Examiner’s
statement of rejection includes reference to Takaichi, we note that the
Examiner does not rely on this reference for any teachings regarding
claim 5. In affirming a multiple reference rejection under 35 U.S.C. § 103,
the Board may rely on fewer than all of the references relied on by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961).
The Examiner also does not rely on any additional modification of the
comparative composition in rejecting claims 11, 12, 21, 22, or 24–26 as
obvious. Thus, we agree with the Examiner that these claims are obvious,
i.e., anticipation being the epitome of obviousness, over Van Benthum as
evidenced by Lemieux and Chaplin.
c. Claims 19, 20, 23, and 27
The Examiner relies on Takaichi only to address the obviousness of
using lecithin as an emulsifying agent, which is a requirement of claim 19.
(Non-Final Action 6.) As discussed above, Van Benthum’s invention is
directed to sterol or a stanol fatty acid ester plus an oil phase. Van Benthum
goes on to demonstrate that including a sterol or a stanol fatty acid ester with
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another lipid component does arrive at an organogel that has a less cheesy
and cardboard off-taste than without including a sterol or a stanol fatty acid
when the fat blend was a coconut oil. (Van Benthum ¶¶ 74–77.)
However, as the Examiner noted, paragraph 6 of Van Benthum,
indicates that “a combination of fats or surfactants and bitter peptides results
in a reduction of bitterness due to complexation of the peptides with
emulsifier or fat (pg, 1[0006].” (Non-Final Action 11.) In particular, in
paragraph 6, Van Benthum states “WO-A-03/055324 . . . discloses that taste
problems are encountered with the use of protein hydrolysates in food
products. A bitter taste is reported.” (Van Benthum ¶ 6.) That paragraph
further states that one solution to this problem was “using at least two
cholesterol lowering agents.” (Id.) The paragraph continues, however, to
explain that “[a] further measure that is suggested is the complexing of
protein hydrolysates with emulsifiers or with plant sterols.” (Id. (emphasis
added).) Thus, even though, as Appellant argues (Appeal Br. 7), the Van
Benthum invention comprises a product that includes a sterol and/or a stanol
fatty acid ester, the teachings of Van Benthum are not limited to the
invention those inventors described. “The use of patents as references is not
limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain.” In re Lemelson, 397 F.2d 1006, 1009
(CCPA 1968).
As just explained, Van Benthum teaches that bitter protein
hydrolysates were known to be complexed with emulsifiers, and to do so to
reduce the bitter taste of those protein hydrolysates. And, we agree with the
Examiner that based on the teachings in Lemieux that all such bitter peptides
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are known to be lipid soluble, as such, in a complex with emulsifiers, the
bitter protein hydrolysate would be expected to be dissolved in the oil phase.
(Non-Final Action 6.)
Although we do not agree with the Examiner that the comparative
composition of Van Benthum is simply a less preferred embodiment of Van
Benthum’s invention, we, nevertheless, agree with the Examiner that the
method of claim 19 would have been obvious to one of ordinary skill in the
art from the teachings of the cited references. In particular, beside the
teaching of paragraph 6 of Van Benthum of emulsifying protein
hydrolysates, Takaichi teaches lecithin was known to be a useful
emulsifying agent to make gel compositions that include whey protein
hydrolysates. (See Takaichi ¶ 31 (protein hydrolysate), ¶¶ 62–68 (including
a fat such as long chain or medium chain fatty acid triglyceride), ¶¶ 71–76
(including an emulsifying agent used in the field of food products, such as
lecithin).)
We conclude from the foregoing teachings of paragraph 6 of Van
Benthum and the method of making an emulsion that includes adding a
gelator described in Van Benthum in Example 1 that it would have been
obvious to have substituted, in an emulsion such as the comparative
composition made by the process described in Example 1 of Van Benthum, a
lecithin and medium chain triglycerides as the “emulsifier” with a
reasonable expectation that the bitter protein hydrolysates would migrate
into the oil droplets in that lecithin MCT oil phase suggested by Takaichi
and be entrapped in the organogel. “Express suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982).
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There is a reasonable likelihood that such a combination would even
achieve a reduction in bitter taste of the composition, given that Van
Benthum paragraph 6 teaches such a possibility with its suggestion that a
sterol is not necessary with a complexation of protein hydrolysate plus
emulsifiers. That such might not be the best result given the taste results of
Example 1 of Van Benthum using a different oily phase does not, however,
require a conclusion of nonobviousness. “[T]he question is whether there is
something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination, not whether there is something in
the prior art as a whole to suggest that the combination is the most desirable
combination available.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
(citation omitted). We find such a suggestion provided by paragraph 6 of
Van Benthum and Takaichi.
Thus, for the foregoing reasons, we affirm the Examiner’s rejection of
claim 19 as being obvious over Van Benthum, Lemieux, Chaplin, and
Takaichi.
Regarding the remaining claims of this rejection requiring a
substitution for an ingredient of the comparative composition of Van
Benthum (i.e., claims 20, 23, and 27), we note that Appellant does not argue
those claims separately. Where “claims are not separately argued, they all
stand or fall together.” In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983);
37 C.F.R. § 41.37(c)(1)(iv).
d. The additional rejections addressing claims 19 and 28
We note that Appellant’s argument against the Examiner’s rejection
of the additional rejections is that the additional references relied upon by
the Examiner do “not remedy the deficiencies of Van Benthum, Lemieux,
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and Chaplin.” (Appeal Br. 11–12.) For the reasons discussed, we do not
find a deficiency with respect to the combination of Van Benthum, Lemieux
and Chaplin regarding a protein hydrolysate emulsion composition that
includes a gelator and does not include a sterol and/or stanol fatty acid ester.
Consequently, we affirm the Examiner’s rejection of claim 19 as being
obvious over Van Benthum, Lemieux, Chaplin, and Friedman as well and
the rejection of claim 28 as being obvious over Van Benthum, Lemieux,
Chaplin, and Hill.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
5, 11, 12,
19–27
103 Van Benthum,
Lemieux, Chaplin,
Takaichi
5, 11, 12,
19–27

19 103 Van Benthum,
Lemieux, Chaplin,
Friedman
19
28 103 Van Benthum,
Lemieux, Chaplin,
Hill
28
Overall
Outcome
5, 11, 12,
19–28

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED